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DISPUTES RELATING TO THE REGISTRATION OF NATIONAL INTERNET DOMAIN NAMES

Disputes over the registration of national internet domain names (RS/СРБ) (hereinafter: “Domain“)  arise in a situation when the holder of a registered trademark wish to register Domain that is identical or similar to his trademark, but such a domain is already registered by a third party, or when Domain use violate intellectual property rights or any other subjective rights of third parties. In described situations, a dispute arises between the domain registrant and the trademark holder over the right on Domain use.

Such disputes can be resolved in arbitration proceedings before the Dispute Resolution Commission established under the Serbian Chamber of Commerce (hereinafter: “Arbitration“). The registrant accepts the jurisdiction of the Arbitration at the moment of Domain registration within the rsTLD registry by accepting the General Terms and Conditions for the registration of national Internet domain names. The other party which pretend on the disputed Domain agrees with the jurisdiction of the Arbitration by initiating Arbitration proceedings, i.e. by filing a claim. The initiation of Arbitration does not exclude the possibility of initiating court proceedings.

In the Arbitration proceeding a decision may be passed on termination or transfer of the registration of the disputed Domain from the registrant to the claimant if it is proved that the following conditions are met: (i) that the Domain is identical to the claimant’s trademark or is similar to it to the extent that it might create confusion and deceive participants in the market; (ii) that the registrant has no right to use or legitimate interest in using the disputed Domain; (iii) that the registrant has registered the Domain and used it in bad faith and contrary to good business practice.

It will be considered that the registrant has a legitimate interest in using a Domain if it can be proven: a) that registrant used the Domain for commercial purposes, following good business practice and in good faith, before any knowledge of a petition being brought; or b) that before a petition being brought registrant was already publicly known as the owner of that Domain, even though he/she did not register the disputed trademark; or c) that registrant is using the Domain purely for noncommercial purposes, with no intention of deceiving consumers and other participants in the market concerning the origins of goods or services offered in the context of a significant degree of similarity or identically with the claimant trademark.

A Domain shall be considered as registered or used contrary to good business practice and in bad faith in the following cases: a) if it is proven that the registrant registered a  Domain primarily intending to sell or lease it to the claimant, who is the owner of the trademark, or for the sale or lease of the Domain to the claimant’s market competitor, as evidenced by a proven disproportion between the registration price of the Domain and the price at which it has been offered for sale to the aforementioned; b) if it is proven that the registrant registered a Domain to prevent the trademark owner from registering their trademark as a Domain; c) if it is proven that the registrant registered a Domain to damage market competitor; d) if it is proven that the registrant used the identical Domain or to a significant degree similar to the claimant’s trademark primarily to attract Internet users to website or another Internet service for commercial purposes, by creating confusion regarding the origins of the goods for sale on this site or via this Internet service, or regarding the services being offered.

When registering a domain and accepting the General Terms and Conditions for Registration of National Internet Domain Names, the registrant declares that to the best of his knowledge and sincere conviction, the registration of the domain name does not violate intellectual property rights or any other subjective rights of third parties. This statement implies that the registrant, before the domain name registration, has checked whether there is a registered trademark under that name.

The  Arbitration decision is final and cannot be appealed. In case of a favourable decision, the domain registry will transfer the Domain from the registrant to the claimant, unless the party has submitted proof of initiating proceedings before the competent court.